Analysis: Henderson, Lindland Battle Over Team Quest Trademark Rights

Former training partners Dan
Henderson and Matt
Lindland are now in a lawsuit over the rights to use the Team
Quest name and logo.

Henderson filed a lawsuit in California federal district court
against Lindland and his company, Team Quest Fight Club, LLC,
alleging trademark infringement, copyright infringement and unfair
competition. Put simply, the lawsuit boils down to the issue of who
has the right to use the Team Quest trademarks.

First, a brief crash course in trademarks: A trademark, often
called a “mark,” is a term often used to refer to brand names and
logos, which are like property that can be owned, transferred, or
loaned out (“licensed”). Trademark owners ordinarily register their
marks with the U.S. Patent and Trademark Office (USPTO) soon after
they begin using them to legally protect their rights to the marks.
Trademark owners usually first search the USPTO’s trademark
database before applying for registration to find out if another
mark already exists that looks or reads like theirs. Also, anyone
applying for trademark registration must disclose both the owners
of the trademark and any conflicting rights to the trademark that
could interfere with their registration. Although the USPTO
registration is not mandatory, it has several advantages. Usually,
once someone registers their trademark, they are presumed to be the
“senior user” and can defend against anyone else (“junior users”)
who use a similar trademark that is “likely to cause confusion”
among consumers.

According to the complaint, Henderson and Randy
Couture formed Team Quest in 1999, and the two commissioned an
artist to make the “fist” logo that continues to be stamped on Team
Quest merchandise today and copyrighted that artwork with the U.S.
Copyright Office. Henderson alleges that Lindland then joined the
team in 2001, after which he and Couture opened their gym in
Portland, Ore. Although Henderson claims he and Couture were
already actively using the Team Quest name and logo when Lindland
came into the picture, the trademarks had not yet been registered
with the USPTO. The complaint further alleges that in 2006,
Lindland registered trademarks with the USPTO to himself, Team
Quest Fight Club, LLC, Couture and trainer Robert Follis, but
neither these trademark registration applications nor any of the
later applications for Team Quest between 2006 and 2009 mention
Henderson as an owner of the mark, including the trademark
application for Team Quest MMA Fitness, one of Henderson’s own
companies. Henderson claims that this omission was intentional on
Lindland’s part.

According to the complaint, trouble started brewing when Lindland
asked Henderson for reimbursement on fees and other expenses
related to the trademark applications. Henderson refused, allegedly
telling Lindland that he was withdrawing his consent for Lindland
to use the marks and demanding that Lindland turn the marks over to
him. The situation devolved from there. Lindland allegedly sent
Henderson a “cease and desist” letter, claiming he owned the marks
and insisting that Henderson stop using them. According to one of
Henderson’s attorneys, negotiations were ongoing for quite some
time in an effort to resolve the dispute. But the parties have been
unable to work things out thus far. As a result, Henderson resorted
to litigation. Now, he seeks to void Lindland’s trademark
registrations and obtain a permanent injunction -- in other words,
a complete prohibition -- on Lindland’s further use of the Team
Quest or Team Quest MMA Fitness trademarks. Henderson also wants a
full accounting for all profits that Lindland earned from using the
trademarks after Henderson allegedly withdrew his consent for their
use, in addition to other damages and attorneys’ fees.

This lawsuit is certainly not cut and dry. Even though Lindland and
his company are technically the registered “owners” of the
trademarks, according to the USPTO records, registration is usually
not the only factor the court takes into consideration in a
trademark infringement case. In trying to identify the “senior
user” of the trademark, the USPTO registration is only one piece of
evidence that the court ordinarily takes into account. Registration
can, however, be a very strong piece of evidence in most cases. But
the fact that the registration is in Lindland and his company’s
name will not automatically preclude Henderson from getting a shot
at proving he was, indeed, the “senior user” before Lindland ever
registered the trademarks. In fact, Henderson claims he has
continuously used the Team Quest marks since 1999, two years before
Lindland joined the team, and, in that time, has “amassed an
enormous amount of good will” on behalf of the Team Quest name
through his MMA accomplishments. According to the complaint,
Henderson also owns the copyright on the artwork that is used in
the Team Quest logos, which the court may also choose to take into
account in determining whose rights take priority.

Lindland and his company have not yet filed an answer to
Henderson’s complaint, but we can probably expect to see one
sometime in the next month, unless the parties decide to resolve
the matter informally outside of the courtroom before then.

Tracey Lesetar, an attorney at the global law firm Orrick,
Herrington & Sutcliffe, is experienced in various matters
related to the business of MMA. A more detailed background
regarding her experience is available through her lawyer profile at
www.orrick.com. This article does not provide legal advice, and any
opinions expressed in this article are solely those of the author
and do not reflect the views of her law firm. Lesetar can be
reached at tlesetar@sherdog.com. J.R. Riddell
(jriddell@sherdog.com) also contributed to this article.